INTELLECTUAL PROPERTY REGIME : PATENTS, COPYRIGHTS, TRADEMARKS

INTELLECTUAL PROPERTY
The Law relating to Intellectual Property rights in Sri Lanka is contained in the Code of Intellectual Property Act No.52 of 1979 as amended by (Amendment) Act 13 of 1997.

The said Act revised, consolidated, amended and embodied in the form of a code the law relating to Copyright, Industrial Designs, Patents, Marks, Trade Names, and Unfair Competition, and provided for the better registration, control and administration thereof and for matters connected therewith and incidental thereto. Regulations under the Code have been made and published in the Sri Lanka Government Gazette Extra Ordinary No.60/20 of 31.10.1979 and amendments thereto by Gazettes Extraordinary No.514/12 of 12.07.1988, No. 579 of 08.02.1990 and No. 873/10 of 02.06.1995). Please see page 4.6 also.

COPYRIGHT
Sri Lanka is a Member of the Universal Copyright Convention (UCC) and the Berne Convention for the protection of works of Art and literature. Part I 1 of the Code deals with the subject of Copyright Law and authors of Original literary, artistic and scientific works are entitled to protection, irrespective of the quality and the purpose for which they were created. 4Jthough there is no provision to register a Copyright with any Authority in Sri Lanka, protection of Copyright applies to works of authors who are nationals, or have their habitual residence In Sri Lanka; works first published in Sri Lanka irrespective of the nationality or residence of their authors and all works which by virtue of treaties entered into by Sri Lanka are to be protected as well as works of Sri Lanka folk lore. The right of the Author of a protected work shall subsist for the fife of the Author and 50 years thereafter. After the Author's death the said right shall be exercisable by his heirs, but limited to a period of 50 years.

INDUSTRIAL DESIGNS
Part III of the Code deals with Industrial Designs and the protection afforded thereto is in addition to and not in derogation of any other protection under any other written Law, in particular the law relating to Copyright. Hence, if an Industrial Design is such an artistic work that gives it protection under Copyright then that Industrial Design is protectable under the Copyright Law even though the same may not have been registered as a design under the Act. An Industrial Design has been defined to mean any composition of lines or colours or any three dimensional form whether or not associated with lines or colours, that gives a special appearance to a product of industry or handicraft and is capable of serving as a pattern for a product of industry or handicraft. Provided however, that anything in an Industrial Design which serves solely to obtain a technical result shall not be protected under the provisions relating to Industrial Designs. To claim protection for an Industrial Design the same must be registered. Novelty in relation to an Industrial Design is defined to mean an Industrial Design which had not been made available to the public anywhere and at any time whatsoever through description, use or in any other manner before the date of application for registration of such Industrial Design or before the priority date validly claimed. Certain exceptions to this rule are more fully set out in the Act including the right to obtain protection and matters relating to two or more persons jointly creating the design, creation of design in the performance of a contract of employment etc. 

With an application to register a specimen or article embodying the Industrial Design, copies of photographic or graphic representation of the Design in colour where it is in colour or drawings and tracings of the design are required to be filed with an indication of the kind of products for which the Industrial Design is to be used. The prescribed fee at present which should accompany the application for registration is Rs.200/- for each design.

Design applications are examined by the Director only to ensure certain formal requirements. A design application is not published for opposition before being granted registration. It is only published after registration and any person is entitled to apply to the District Court of Colombo to have the registration declared null and void on grounds specified in the Code. No limitation period for such an application is provided. The registration of an Industrial Design will expire 5 years after the date of receipt of the application and may be renewed for two consecutive periods of 5 years each, attracting Rs.650/- for the first renewal and Rs. 1300/- for the 2nd renewal. The maximum life of an Industrial Design Registration is 15 years from date of application.

PATENTS
The International Conventions or Treaties to which Sri Lanka is a Member are the Patent Co-operation Treaty (PCT), Paris Convention and Treaty for establishing World Intellectual Property Orgar4mtion (WIPO).

Part IV of the Code deals with Patents.
A patent will be granted in respect of an invention, if ft is new, involves an inventive step and is industrially applicable. Under our Code an invention has been defined to mean "An Idea of an inventor which permits in practice the solution to a specific problem in the field of technology" and an invention may be or relate to a product or a process.

For an invention to be patentable it should be new i.e. it should not have been anticipated by prior art. Prior art is defined in the Code. Novelty searches are conducted by local examiners. Local searches are conducted only when an international type search report cannot be furnished. 

Certain unpatentable Inventions are dealt with in the Code.
Documents required for Patent application accompanying Form PI are: Description of the Invention (Specification); Claim or claims; a drawing or drawings, where required; an Abstract of the invention; Power of Attorney/Authorisation if necessary and where the applicant is the inventor the application may be accompanied by a declaration signed by the inventor giving his name and address and requesting that he be named as such in the patent, and where the applicant is not the inventor the request (i.e. Form PI) should be accompanied by a statement justifying the applicant's right to the patent.

With regard to publication, oppositions and invalidation’s, a Patent application is not published before its grant. The publication is effected only after the grant. The grant of a Patent shall not be refused and a Patent shall not be invalidated on the ground that the performance of any act in respect of the claimed invention is prohibited by any law or regulation except where the performance of the act would be contrary to public order.

Once the Director is satisfied of conditions for grant as set out in Section 75 of our Code the registration will be granted. The fee required to be paid is Rs. 1,800.00. Where the Director grants the Patent he should forthwith issue to the applicant a Certificate of the Grant of the Patent and a copy of the Patent together with a copy of the Search F4port, record the Patent. in the Register and as soon as possible thereafter the Director will cause to be published in the Gazette a reference to the grant of the Patent and make available to the public on payment of the prescribed fee copies of the patent together with the copies of the Search Report. 

An application for invalidation or declaration for nullity of a patent can be made to the District Court of Colombo on grounds specified in Section 95 of the Code.

A patent will expire 15 years after the date of its grant which relates back to the date of application. However, where a patentee intends to keep the patent in force he should pay the prescribed annual fee twelve months before the date of expiration of the 2nd and each succeeding year during the term of the patent.

The term of 15 years which is the life of the patent is not extendable. For the first and second extensions a sum Rs.2,400.00 each is payable; for the third and fourth extensions a sum Rs.3,600.00 each; for the fifth to seventh extensions a sum Rs.4,200.00 each, and for the eight to thirteenth extensions Rs.8,400.00 each, is payable. 

TRADE MARKS, SERVICE MARKS AND TRADE NAMES

Para V of the Code deals with Trade Marks. 

The Code has defined a Trade Mark to mean “any visible sign serving to distinguish the goods of one enterprise from those of other enterprises” and a mark means both a Trade Mark or a Service Mark, and a Service Mark has been defined in the Code to mean “any visible sign serving to distinguish the services of one enterprise from those of other enterprises”. 

A Trade Name means “the name or designation identifying the enterprise of a natural or legal person”. 

Protection by Registration

A Trade Mark or Service Mark obtains protection as spelt out under the Code if the same is registered. 

Registration requirements
Registration of a Mark is granted to the person who has first fulfilled the conditions for a valid application or who is the first to claim priority for his application provided that the Mark is not inadmissible under Section 99 or 100 of the Code.

Rights of a Registered Owner
A registered owner of a Mark has exclusive right in relation to that mark to use the mark, to assign or to transmit the registration of the mark and to conclude licence contracts. 

The Registered owner can prevent third parties from making 

(a) any use of the mark, or of a sign resembling it in such a way as to be likely to mislead the public, for goods or services in respect of which the mark is registered or for other goods or services in connection with which the use of the mark or sign is likely to mislead the public; and 

(b) any other use of the mark or of a sign or trade name resembling it, without just cause and in conditions likely to be prejudicial to the interests of the registered owner of the mark,

if a third party has done or seeks to perform any of the above without the consent of the registered owner.

Limitation of Registered Owner's rights
The Registered Owner however cannot preclude third parties - 

(a) from using bona fide their names, addresses, pseudonyms, geographical name or exact indications concerning the kind, quality, destination, value, place of origin or time of production or of supply of their goods and services, in so far as such a use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services; 

(b) from using the mark in relation to goods lawfully manufactured, imported, offered for sale, sold, used, or stocked in Sri Lanka under that mark, provided that such goods have not undergone any change.

Basic procedure for Registration
When a party makes an application for registration the Registrar examines the application and if the application complies with Sections 102 and 105 the Registrar will examine whether the mark contravenes any provisions of Section 99 or 100 of the Code. If the mark is admissible under Section 99 or 100 the applicant, once notified should within 2 months pay the prescribed fees for publication of the mark by the Registrar in the Gazette.

Thereupon, any person interested can oppose the registration of the mark within a period of 3 months of the publication in the Gazette or such extended time as may be allowed by the Registrar.

If no notice of opposition is received by the Registrar from any person, the Registrar will proceed to register the mark.

Before the said publication the Registrar examines whether the application complies with the matters stated in Section 102 and 105 of the Code (and where applicable, Section 103 and 104) and if the application does not comply with those sections the Registrar could call upon the applicant to cure the defects failing which the application will be refused.

If the Registrar is of opinion that the mark is inadmissible under Sections 99 or 100 he will notify the applicant and on receipt of such notification the applicant may within one month make submissions in writing to the Registrar against the refusal, and thereafter the Registrar will hear the applicant at an inquiry and may either accept the mark for registration or affirm his refusal to register. 

Once the mark is registered the Registrar will issue to the applicant a Certificate of Registration and such registered owner will thereafter enjoy. the exclusive rights as such registered owner referred to earlier.

Once the mark is registered it cannot be removed from the Register except under the provisions of Sections 130, 132 and 172 of the Code. 

Section 130 relates to nullity proceedings, but such an application will have to be made within 5 years from the date of registration of the mark. 

Section 132 relates to removal of the mark if the registered owner has without valid grounds failed to use the mark within Sri Lanka during 5 consecutive years immediately preceding the date of the application to Court or has caused, provoked or tolerated the transformation of the mark as more fully set out therein. 

Section 172 deals with correction and rectification of the Register on certain grounds set out under that Section. No time limit for bringing an application under Section 172 is prescribed. 

Opposition Proceedings
Any person filing opposition papers to the registration of the mark may be heard by the Registrar, if the Registrar considers such hearing necessary and the Registrar may either refuse registration of the mark by allowing the opposition or he may reject the opposition and proceed to register the mark. 

Grounds of Opposition
Any person who considers that the mark is inadmissible on one or more of the grounds referred to in Sections 99 and 100, may file such Notice of Opposition within the time period set out earlier stating his grounds therefor. The Registrar will then serve a copy of such opposition on the applicant and call upon the applicant to present his observations within a period of 3 months.

Duration of Registration
The Registration of a mark shall expire 10 years after the date of registration, and the registration dates back to the date of receipt by the Registrar of the application for registration.

However, the registration of a mark may be renewed for consecutive periods of 10 years each on payment of the prescribed fee, which presently is Rs.1250/- for each such renewal.

Renewal of registration will not be subject to further examination by the Registrar or opposition by any person.

The renewal fee should be paid within the 12 months preceding the date of expiration of the period of registration. However a grace period of 6 months is allowed to renew such marks after the date of such expiration with a payment of a surcharge.

Associate Mark
When an application is made for the registration of a mark which is identical or resembles closely a registered mark of the applicant for the same class of goods the Registrar will require as a condition that such mark should be entered on the Register as an associated mark.Associated marks are assignable and transmissible only as a whole and not separately.

Collective Marks
Sections 134 to 138 of the Code deal with collective marks. 'Collective Marks' as defined by the Code means any visible sign designated as such and serving to distinguish the origin or any other common characteristics of goods or services of different enterprises which use the mark under the control of the registered owner. Its function, like that of an individual trade mark, is to indicate origin. However unlike an individual trade mark, it does not distinguish the services or goods of one enterprise from those of another. 

Protection of Trade Names
The Code specifically provides that notwithstanding the provisions of any written law for registration of a Trade Name that such a Trade Name should be protected even prior to or without registration against any unlawful act committed by a third party. Further any subsequent use of a Trade Name by a third party likely to mislead the public will be deemed unlawful. 

General Provisions 

Appeals
Any person aggrieved by any decision or Order made by the Registrar under any provision of the Code can appeal therefrom to the District Court of Colombo which is empowered to have and exercise the same discretionary powers as are conferred upon the Registrar. 

An appeal is available to the Court of Appeal from any Judgment or Order of the District Court.

Injunction Provisions
The registered owner of any Industrial design, Patent or Mark could obtain an injunction on proving that any person is threatening to infringe or has infringed the said Industrial design, Patent or Mark or is performing acts which makes it likely that infringement will occur, and thereby restrain such person from committing or continuing such infringement and the Court may even award damages as it thinks appropriate. The provisions of the Civil Procedure Code would apply to applications relating to injunctions.

Miscellaneous
It is desirable for persons involved in trade or business and who own trademarks etc. to subscribe to the Government Gazette, particularly, Part I Section (111) which contains Trade Mark, Industrial Design and Patent Notices an ep abreast of the publications made by the Registrar in this regard and take appropriate action that is necessary to protect their legal rights.

Unfair Competition
Any act of competition contrary to honest practices in industrial or commercial matters is deemed to constitute an act of unfair competition including

(a) all acts of such a nature as to create confusion by any means whatsoever with the establishment, the goods, services or the industrial or commercial activities of a competitor; 

(b) a false allegation in the course of trade of such a nature as to discredit the establishment, the goods, services or the industrial or commercial activities of a competitor; 

(c) any indication of source or appellation of origin the use of which in the course of trade is liable to mislead the public as to the nature, manufacturing process, characteristics, suitability for their purpose or the quantity of goods; 

(d) making direct or indirect use of a false or deceptive indication of the source of goods or services or of the identity of their producer, manufacturer or supplier; and 

(e) making direct or indirect use of a false or deceptive appellation of origin or imitating an appellation of origin even if the true origin of the product is indicated, or using the appellation in translated form or accompanied by terms such as "kind", "type", "mark", "imitation" or the like. 

These acts can be restrained by an injunction referred to earlier on application made by any person or association of producers, manufacturers or traders aggrieved by any of the acts referred to above. 

COURT
The 'Court' is defined by the Act to mean the District Court of Colombo. (vide sec. 186 of the Code)

All proceedings under the Code of Intellectual Property Act other than the proceedings required to be taken in terms of the Act in the District Court of Colombo should now be instituted in the Commercial High Court. The Minister of Justice has power to make an order vesting jurisdiction in the Commercial High Court to hear even the proceedings now required in terms of the Act. Such an order has not yet been made by the Minister. Please see paragraph 1.7 under Chapter 1.

FEES PAYABLE TO THE REGISTRAR
(Intellectual Property Regulations published in Gazette Extraordinary No. 60/20 of 31st October 1979 as amended by regulations published in Gazette Extraordinary Nos. 873/10 of 2nd June 1995 and Gazette No. 994 dated 19th September 1997) 

NOTE: By the Code of Intellectual Property (Amendment) Act No. 13 of 1997 certified on 21st July 1997 changes have been made to the following offices or designations and the references in this Chapter to the old offices/descriptions should be read thus :